The USPTO’s invalidation of both patents involved in the ongoing legal battle between Intel and VLSI is the most recent development in a long and contentious debate among those who watch Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) proceedings closely. This decision is a positive sign for America’s patent system, but there is still more work to be done to fully undo the damage caused by the NHK-Fintiv rule. Intel got some delayed justice in this case, but that can’t be said for all parties who had petitions for PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review discretionarily denied. The VLSI case is only one example of the billions of dollars of damage potentially inflicted when the USPTOUnited States Patent and Trademark Office. See also PTO. doesn’t fulfill its obligation to consider post-grant petitions on the merits. In light of this result, the USPTOUnited States Patent and Trademark Office. See also PTO. should proactively re-examine the petitions for all petitioners denied post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. because of the flawed NHK-Fintiv rule. Where appropriate, it should—at a minimum—sua sponte conduct ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations of the challenged patents.
For those who are not familiar with the case, VLSI, a non-practicing entity (NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More) and affiliate of Fortress Investment Group, acquired a broad portfolio of patents from a Dutch semiconductor company in 2019. Shortly after obtaining these patents, VLSI sued Intel in the Western District of Texas—a favorite venue for NPEs—and a jury awarded VLSI more than $2.1 billion in damages.
At the outset of the legal battle, Intel filed petitions for inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) at the USPTOUnited States Patent and Trademark Office. See also PTO., which should have resulted in efficient, expert analysis of the patents in question. However, under previous USPTOUnited States Patent and Trademark Office. See also PTO. Director Andrei Iancu’s NHK-Fintiv rule, and in violation of its statutory obligation to provide a merits decision, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. declined the review petitions based on the co-pending Texas litigation without ever considering the case’s merits. (It’s also important to note that a discretionary denial is always an admission that the USPTOUnited States Patent and Trademark Office. See also PTO. believes that the petition met the threshold requirements of post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure.. If it didn’t, the agency would simply have denied on the merits.)
Eventually, PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. took up review of the relevant patents when two unrelated entities, Patent Quality Assurance (PQA) and OpenSky, submitted petitions for IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. They did not independently develop those petitions—instead, they used almost identical copies of Intel’s petitions, down to using the same expert witnesses. Given that there was no concurrent litigation at that time, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. granted review of both patents. After a controversy in which Director Vidal decided that PQA and OpenSky had abused the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. process and had acted improperly toward both VLSI and Intel, the proceedings were allowed to continue with Intel as the lead petitioner.
It is important to note that, while the PQA and OpenSky petitions were nearly identical to the Intel petitions, their petitions were assessed on the merits rather than discretionarily denied based on the Fintiv rule. VLSI’s patents have now received the review they should have received when Intel requested it. After that review, they were invalidated, but absent OpenSky and PQA, Intel might have been on the hook for more than $2 billion based on patents that the USPTOUnited States Patent and Trademark Office. See also PTO. now agrees are not valid.
In light of this case, the USPTOUnited States Patent and Trademark Office. See also PTO. must now protect against both new economic harms inflicted by the Fintiv rule and address the potential harms by its prior application. To protect against future harms, the USPTOUnited States Patent and Trademark Office. See also PTO. should decide in its current rulemaking to completely eliminate the Fintiv rule in favor of simply addressing the merits. (More on that in a future post.) But that leaves in place the hundreds of Fintiv denials already issued where the petitioner never had the USPTOUnited States Patent and Trademark Office. See also PTO. look at the merits.
Following the designation of Fintiv as a precedential case, the percentage of cases in which parallel litigation was cited as a reason to deny institution increased significantly, from 24.7% to 50.6%. Moreover, the number of discretionary denials due to parallel litigation accounted for approximately 38% of decisions analyzing NHK-Fintiv between October 2020 and March 2021, as revealed by a USPTOUnited States Patent and Trademark Office. See also PTO. report.
We already know that IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., when accessible and functioning properly, works and helps catalyze economic growth. One study from this March found that reducing discretionary denials would result in an increase of $482.1 million in gross product over the next 10 years. While the Intel-VLSI denials might have been among the most harmful, that doesn’t mean those other decisions didn’t also result in American innovators being forced to give money to hedge funds and NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More instead of spending it on innovation.
While reviving each petition may be beyond the scope of the USPTO’s authority, there is an alternative. The Director can, on their own initiative, review all of the denied petitions and, under 35 U.S.C. § 303, order ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new of a patent. To ensure that prior discretionary denials have not unduly harmed American companies, the USPTOUnited States Patent and Trademark Office. See also PTO. should engage in a full review of denied petitions and, where appropriate, convert the petition into an ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new.
It is crucial that every party denied review under Fintiv have their petitions reviewed. The USPTOUnited States Patent and Trademark Office. See also PTO. has an obligation to make sure that invalid patents which they declined to review aren’t still around to be used against innovative, productive companies.
